11532303 (B.P.A.I. Sep. 4, 2012)

Ex Parte Fischer

Board of Patent Appeals and InterferencesSep 4, 2012

11532303 (B.P.A.I. Sep. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte KLAUS-JUERGEN FISCHER ____________________ Appeal 2010-005516 Application 11/532,303 Technology Center 3700 ____________________ Before: STEVEN D.A. McCARTHY, CHARLES N. GREENHUT, and WILLIAM V. SAINDON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005516 Application 11/532,303 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 35. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a foldable wiper plate. Claim 1, reproduced below, is illustrative of the claimed subject matter: A foldable wiper plate comprising: a first plate wing pivotable about a first axis member; and a second plate wing pivotable about a second axis member differing from the first axis member; wherein the first plate wing includes a first lock-in device configured to engage the second axis member so as to releasably interlock the first plate wing with the second axis member. REJECTIONS Claims 1, 2, 4, 5, 8, 10-22 and 24-27 are rejected under 35 U.S.C. § 102(b) as being anticipated by DE 295 19 320 U11 (pub. Mar. 7, 1996). Ans. 3. Claims 3, 6, 7, 9, 23, 34 and 35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over DE 295 19 320 U1. Ans. 4. Claims 28-33 are rejected under 35 U.S.C. 103(a) as being unpatentable over DE 295 19 320 U1 in view of Streutker (US 2003/0009839 A1, pub. Jan. 16, 2003). Ans. 4. 1 References are to the English-language translation. Appeal 2010-005516 Application 11/532,303 3 OPINION In each of the above rejections the Examiner asserts that DE 295 19 320 U1 discloses “a first lock-in device configured to engage the second axis member.” We see no issue regarding the Examiner’s characterization of the ends or prongs 5 of plate 1’ as a “lock-in” device per se. See Ans. 5. However, the critical issue raised by Appellant is whether that end 5 is “configured to engage” the journal 2, interpreted by the Examiner as the claimed “second axis member.” Ans. 5; App. Br. 5-6. The phrase “configured to engage . . . ” is functional in that it defines how the lock-in device is configured by what it does, as opposed to what it is. As stated in Ex parte Skinner, 2 USPQ 2d 1788, 1789 (BPAI 1986): We are mindful that there is a line of cases represented by In re Swinehart , 439 F.2d 210, 169 USPQ 226 (CCPA 1971) which indicates that where an examiner has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, the examiner possesses the authority to require an applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Nevertheless, before an applicant can be put to this burdensome task, the examiner must provide some evidence or scientific reasoning to establish the reasonableness of the examiner’s belief that the functional limitation is an inherent characteristic of the prior art. See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Here, the basis for the Examiner’s belief that end or prong 5 is “configured to engage” journal 2 appears to be the Examiner finding that end 5 “does engage” or “includes a notched portion which engages with,” journal 2. Ans. 3, 5. The Examiner does not cite to any evidence or provide any technical reasoning to establish the basis for making this finding. As Appeal 2010-005516 Application 11/532,303 4 Appellant points out, there appears to be a gap between the notch of end 5 and the journal 2 in Figure 1 of DE 295 19 320. App. Br. 5-6. The Specification of DE 295 19 320 appears to be completely silent on this issue. Thus, the Examiner’s finding appears to be the product of speculation and conjecture. Accordingly we must conclude that the Examiner has not demonstrated a sound and reasonable basis for the belief that end 5 is “configured to engage” journal 2. Accordingly, we must reverse all of the Examiner’s rejections since each one relies upon this flawed finding. DECISION The Examiner’s rejections are reversed. REVERSED MP